USPTO Patents Application 09977207

United States Patent and Trademark Office

UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office

Address: COMMISSIONER FOR PATENTS
P.O. Box 1450

Alexandria, Virginia 223 1 3-1450
www.uspto.gov

APPLICATION NO.

FILING DATE

FIRST NAMED INVENTOR

ATTORNEY DOCKET NO.

CONFIRMATION NO.

09/977,207

10/16/2001

Hideo Miura

500.34397CV2

4397

20457 7590 10/05/2004

ANTONELLI, TERRY, STOUT & KRAUS, LLP
1300 NORTH SEVENTEENTH STREET
SUITE 1800

ARLINGTON, VA 22209-9889

EXAMINER

MALDONADO, JULIO J

ART UNIT

PAPER NUMBER

2823

DATE MAILED: 10/05/2004

Please find below and/or attached an Office communication concerning this application or proceeding.

PTO-90C (Rev. 10/03)

\JI 1 l\*XZ r^V* UVJI 1 Olfi f Illicit y

Application No.

09/977,207

Applicant(s)

MIURA ET AL

Examiner

Julio J. Maldonado

Art Unit

2823

- The MAILING DATE of this communication appears on the cover sheet with the correspondence address -
Period for Reply

A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 1 MONTH(S) FROM
THE MAILING DATE OF THIS COMMUNICATION.

- Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may a reply be timely filed
after SEX (6) MONTHS from the mailing date of this communication.

- If the period for reply specified above is less than thirty (30) days, a reply within the statutory minimum of thirty (30) days will be considered timely.

- If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.

- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
earned patent term adjustment. See 37 CFR 1.704(b).

Status

1 )M Responsive to communication(s) filed on 15 July 2004 .
2a)D This action is FINAL. 2b)D This action is non-final.

3) D Since this application is in condition for allowance except for formal matters, prosecution as to the merits is

closed in accordance with the practice under Ex parte Quayle, 1935 CD. 11, 453 O.G. 213.

Disposition of Claims

4) I3 Claim(s) 15-36 is/are pending in the application.

4a) Of the above claim(s) 34 is/are withdrawn from consideration.

5) D Claim(s) is/are allowed.

6) D Claim(s) is/are rejected.

7) D Claim(s) is/are objected to.

8) S Claim(s) 15-33. 35 and 36 are subject to restriction and/or election requirement.

Application Papers

9) D The specification is objected to by the Examiner.

10) D The drawing(s) filed on is/are: a)D accepted or b)D objected to by the Examiner.

Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d).

1 1) D The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152.

Priority under 35 U.S.C. § 119

12) D Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 1 19(a)-(d) or (f).
a)D All b)D Some * c)D None of:

1 .□ Certified copies of the priority documents have been received.

2. D Certified copies of the priority documents have been received in Application No. .

3. D Copies of the certified copies of the priority documents have been received in this National Stage

application from the International Bureau (PCT Rule 17.2(a)).
* See the attached detailed Office action for a list of the certified copies not received.

Attachment(s)

1 ) □ Notice of References Cited (PTO-892) 4) □ Interview Summary (PTO-413)

2) LZI Notice of Draftsperson's Patent Drawing Review (PTO-948) Paper No(s)/Mail Date. .

3) Q Information Disclosure Statement(s) (PTO-1449 or PTO/SB/08) 5) □ Notice of Informal Patent Application (PTO-152)

Paper No(s)/Mail Date . 6) d Other: .

U.S. Patent and Trademark Office

PTOL-326 (Rev. 1-04)

Office Action Summary

Part of Paper No./Mai! Date 20040925

Application/Control Number: 09/977,207 Page 2

Art Unit: 2823

DETAILED ACTION
Election/Restrictions

1 . This application contains claims directed to the following patentably distinct
species of the claimed invention: the first specie directed to a method of forming * an
element separation layer on a semiconductor substrate including the steps of forming a
thermal oxide on the surface of the substrate, forming the element separation layer and
performing a heating process on the substrate having the thermal oxide; the second
specie directed to a method of forming a an element separation layer on a
semiconductor substrate including the steps of forming a first thermal oxide on the
substrate, forming the element separation layer, forming a second thermal oxide layer
on the substrate and performing a heating step on the substrate having the second
thermal oxide.

Applicant is required under 35 U.S.C. 121 to elect a single disclosed species for
prosecution on the merits to which the claims shall be restricted if no generic claim is
finally held to be allowable. Currently, claim 29 is generic.

Applicant is advised that a reply to this requirement must include an identification
of the species that is elected consonant with this requirement, and a listing of all claims
readable thereon, including any claims subsequently added. An argument that a claim
is allowable or that all claims are generic is considered nonresponsive unless
accompanied by an election.

Upon the allowance of a generic claim, applicant will be entitled to consideration
of claims to additional species which are written in dependent form or otherwise include

Application/Control Number: 09/977,207

Page 3

Art Unit: 2823

all the limitations of an allowed generic claim as provided by 37 CFR 1 .141 . If claims
are added after the election, applicant must indicate which are readable upon the
elected species. MPEP § 809.02(a).

Should applicant traverse on the ground that the species are not patentably
distinct, applicant should submit evidence or identify such evidence now of record
showing the species to be obvious variants or clearly admit on the record that this is the
case. In either instance, if the examiner finds one of the inventions unpatentable over
the prior art, the evidence or admission may be used in a rejection under 35
U.S.C. 103(a) of the other invention.

2. Any inquiry concerning this communication or earlier communications from the
examiner should be directed to examiner Julio J. Maldonado whose telephone number
is (571) 272-1864. The examiner can normally be reached on Monday through Friday.

3. If attempts to reach the examiner by telephone are unsuccessful, the examiner's
supervisor, Olik Chaudhuri, can be reached on (571 ) 272-1 855. The fax number for this
group is 703-872-9306 for before final submissions, 703-872-9306 for after final
submissions and the customer service number for group 2800 is (703) 306-3329.
Updates can be found at http://www.uspto.gov/web/info/2800.htm.

Conclusion

Julio J. Maldonado
Patent Examiner
Art UQU2823

Julio J. Maldonado
September 27, 2004

George Fourson
Primary Examiner